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Intellectual Property

Our experienced Intellectual Property legal team regularly publishes articles and updates – the full list of publications appears below. If you'd like to be notified when we add new Intellectual Property publications to the site, please go to our subscription page to sign up for email alerts or, alternatively, you can subscribe to our RSS feed.

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Read about our track record in Intellectual Property law.

Intellectual Property Publications

  • Focus: Green light for Franchising Code reform

    29 July 2013

    Changes to the Franchising Code of Conduct and its enforcement may soon take effect, with the Federal Government accepting most of the recommendations in the recent independent review. Partner Andrew Wiseman and Lawyer Nadia Guadagno report on the some of the significant changes.

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  • Focus: Food

    16 July 2013

    We look at a new voluntary labelling system to give consumers greater information about the nutritional content of food; renewed calls for changes to the country of origin labelling regime; a push to loosen the standard of what can be sold as gluten-free; renewed scrutiny of alcohol advertising; defining the difference between a food and a medicine; and the debate around the safety of GM foods.

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  • Focus: Genomic DNA not patent eligible in the US

    8 July 2013

    A recent US Supreme Court decision has provided some important guidance on the patentability of human genomic material in that country. Partners Sarah Matheson and Dr Trevor Davies, and Law Graduate Israel Cowen report on a ruling that puts the US at odds with most of its trading partners.

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  • Linklaters Insights: China's highest judicial body identifies positive steps in the enforcement and protection of intellectual property rights in China

    4 July 2013

    2012 saw some small, but positive, steps in the area of intellectual property enforcement within China, according to the recently released 2012 annual report of China's Supreme People's Court.

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  • Focus: Recommending change to the Franchising Code

    26 June 2013

    The recent independent review has recommended some important changes to the Franchising Code of Conduct. Partner Andrew Wiseman and Lawyer Nadia Guadagno report on some of the significant recommendations to the Code and its enforcement.

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  • Focus: Aggressive regulation of consumer goods - is 'junk food' next?

    6 June 2013

    Governments and public health experts throughout Australia are turning their attention to the health impacts of excessive consumption of 'junk food'. Although the industry is currently subject to reasonably limited regulation, recent events both here and overseas suggest that the status quo may be under threat. Partner Peter O'Donahoo, Senior Associates Susie Stone and Tim Maxwell and Lawyer Mark Hosking report.

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  • Focus: Full Court clarifies online content delivery

    28 March 2013

    A unanimous decision of the Full Federal Court means that online simulcasts of radio programs are not 'broadcasts', meaning traditional radio broadcasters will need to obtain separate licences from, and pay additional royalties to, copyright owners to transmit radio programs on the internet. Partners Ian McGill and Miriam Stiel and Senior Associate Nathan Shepherd report on the case and its ramifications.

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  • Client Update: New generic Top Level Domains to go live shortly - be prepared!

    15 March 2013

    The first of the new generic Top-Level Domain extensions will soon go live, and now is the time for brand owners to implement their brand protection strategies. There have been almost 2000 applications for new TLDs and it is expected that hundreds of new TLD registries will be open by the end of the year. Partner Tim Golder and Senior Associate Mark Williams explain why it is of paramount importance that brand owners take steps to ensure the protection of their brands at the second level of the new domains and what those steps should be.

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  • Focus: Federal Court win for gene patents, their creators and patients

    27 February 2013

    In a landmark decision that resolves the long-standing debate as to whether genes and their biological products warrant patent protection, the Australian Federal Court has found that isolated DNA and RNA are patentable subject matter. Partners Sarah Matheson and Dr Trevor Davies and Lawyer Yan-Lin Lee report.

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  • Focus: Technology triumphs: Google not responsible for misleading and deceptive ads

    7 February 2013

    The long-running battle with the ACCC over Google's AdWords service has been decided in Google's favour. The High Court unanimously held that Google did not engage in misleading and deceptive conduct by displaying advertisements in the form of 'sponsored links'. Partner Carolyn Oddie and Special Counsel Rebecca Sadleir report on the case, which is positive news for companies involved in the dissemination of information on the internet.

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  • Focus: The good oil on new food regulations

    29 January 2013

    The new, long-awaited standard regulating nutrition and health claims has commenced, with food businesses given three years to transition to compliance with the new comprehensive regime. Partners Richard Hamer and Andrew Wiseman, Senior Associate Ric Morgan and Lawyer Claire Agius report on the new standard.

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  • Focus: 'Raising the Bar' - consultation outcomes

    25 January 2013

    IP Australia has released the outcomes of consultation on draft regulations that will give effect to important changes to the intellectual property system that will come fully into force this year. The strong focus on tightening examination and opposition procedures has largely been maintained, despite stakeholders' concerns that some of the proposed regulations are too restrictive and timelines are unreasonably short. Partner Chris Bird and Senior Associate Linda Govenlock report.

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  • Focus: When is a Facebook comment misleading or deceptive conduct?

    21 January 2013

    The Federal Court has found that a Facebook user's posts constituted misleading or deceptive conduct, highlighting the need for businesses to exercise significant caution regarding any social media communications, even when the author has considered them to be personal. Partner Miriam Stiel and Lawyer Tracy Lu report.

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  • Client Update: Pharma patent extensions under attack

    23 November 2012

    IP Australia has released a paper highlighting issues it intends to cover in its review of pharmaceutical patents. Partner Richard Hamer and Law Graduate Laura Myer report.

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  • Client Update: Leave to appeal Optus TV Now decision refused

    10 September 2012

    The High Court has refused leave to appeal the Optus TV Now decision which means that the Full Federal Court decision, which overturned the trial decision and prevented Optus from operating its TV Now service, stands. A review by the Australian Law Reform Commission may however make recommendations that see further changes to the law. Partner Andrew Wiseman and Lawyer Rob Clark report.

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  • Focus: New PBS reforms to affect pharmaceutical manufacturers

    21 August 2012

    The recent pricing reforms to the Pharmaceutical Benefits Scheme, which will come into effect shortly, will have implications for manufacturers of pharmaceuticals. Senior Associate Ric Morgan and Lawyer Ben Mee report.

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  • Focus: TGA review on packaging and labelling

    7 June 2012

    The Therapeutic Goods Administration has recently released the latest consultation paper in its review of packaging and labelling of medicines in Australia, which, on completion, is expected to have a significant impact on the pharmaceutical industry. Partner Richard Hamer and Lawyer Ali Ridley report

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  • Focus: Food Law Bulletin

    1 June 2012

    In this issue: we look at proposals being considered by Food Standards Australia New Zealand to amend the Food Standards Code, the Labelling Logic reforms, the proposed regulation of nutritive substances and novel foods, Truth in Labelling laws and the fast food nutrition labelling regime, and the introduction of a Small Business Commissioner in South Australia. The developments show examples of a trend back to more prescriptive regulation, as well as a splintering of regulation between different states, which reverse recent progress in achieving greater deregulation and national uniformity.

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  • Client Update: Time shift exception to copyright overturned

    1 May 2012

    The Full Court of the Federal Court unanimously overturned the original decision in the Optus TV Now case that had given a very generous interpretation of 'private and personal use' and who 'made' the copies in question. Partner Andrew Wiseman and Paralegal Ashleigh Shand report on the appeal decision that will protect significant revenues for the copyright holders of television broadcasts

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  • Focus: Is an ISP liable for its customers' copyright infringement?

    24 April 2012

    In a much anticipated judgment, the High Court unanimously upheld the finding of the Full Federal Court and trial judgment that an Internet service provider was not liable for authorising the copyright infringements of its customers. However, the judgment does not entirely close the door to a finding of authorisation by an ISP. Partner Miriam Stiel and Lawyer Rob Clark report on the decision

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  • Focus: Google held responsible for misleading and deceptive ads

    5 April 2012

    The Full Federal Court has unanimously upheld an appeal by the Australian Competition and Consumer Commission, concerning Google's AdWords service. It found that Google was responsible for the content of certain misleading advertisements appearing on its website, and that it, therefore, directly engaged in misleading and deceptive conduct. Partners Miriam Stiel and Carolyn Oddie and Special Counsel Rebecca Sadleir report on the decision

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  • Focus: Australian 'Raising the Bar on IP Rights' Bill passed

    26 March 2012

    Major changes to intellectual property protection in Australia are likely to become law in only a few weeks. Partners Tim Golder and Chris Bird and Lawyer Tracy Lu examine the key substantive features of the new provisions and provide some recommendations for clients to factor into their protection strategies

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  • Focus: Tag a drag for imitators

    13 February 2012

    A recent Federal Court decision expands copyright and trade mark owners' opportunities to argue that imitators' labels constitute infringements. Partner Tim Golder and Lawyer Andrew Wilcock report.

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  • Focus: Government response to gene patenting inquiries

    8 February 2012

    The Federal Government has released a response to three different inquiries relating to the patenting of genes and related biological materials. Partner Sarah Matheson, Senior Associate Tom Reid and Vacation Clerk Lauren John report on the response, which has particular significance to biotech industry participants

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  • Client Update: 'TV Now' shifts goalposts on copyright holders' rights

    3 February 2012

    The Federal Court has held that Optus's 'TV Now', which allows users to record and play back free-to-air television programs on various devices, does not infringe the rights of those who own copyright in the television programs. Partner Andrew Wiseman and Summer Clerk Ashleigh Shand report

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  • Focus: IP and the transition to the Personal Property Securities Act

    20 December 2011

    Companies and individuals that own, license or hold security interests in intellectual property should be aware that the Personal Property Securities Register will go live on 30 January 2012, ushering in the reforms implemented by the Personal Property Securities Act 2009. Partner Tim Golder, Senior Associate Tom Reid and Vacation Clerk Geoff McGrath look at the transitional arrangements and the implications of the new regime

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  • Focus: Appeal decision shows new approach to 'fair basis'

    4 November 2011

    A recent decision of the Full Court of the Federal Court will have a major flow-on in relation to the issue of patent validity in Australia. Partner Richard Hamer, Senior Associate Louise Brunero and Law Graduate Claire Agius report on the successful appeal by Alphapharm, Generic Health and Sigma that will open the market to products in competition with Pfizer's highly successful anti-depressant, Efexor XR (venlafaxine hydrochloride).

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  • Focus: Google Ads not misleading or deceptive

    18 October 2011

    In a decision that provides a useful analysis of what constitutes misleading and deceptive conduct in online advertising, the Federal Court recently dismissed the Australian Competition and Consumer Commission's allegations that Google, by publishing 'Sponsored Links' with its search results, had engaged in misleading and deceptive conduct. The ACCC has appealed the court's decision. Partner Miriam Stiel and Lawyer Chris Govey discuss the court's reasons and the possible implications for your business

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  • Focus: Business names registration to be overhauled

    17 October 2011

    A new national register for business names is to be established, to replace the inconvenient and costly state-based systems that are currently in operation. Partner Tim Golder and Law Graduate Claire Agius report

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  • Focus: Medical patent fatally wounded by 'fundamental' lack of clarity

    21 September 2011

    In a 'rare case' in patent law, a fundamental lack of clarity concerning the performance and function of an aspect of the claimed invention doomed the relevant claims of the patent to invalidity. Partner Sarah Matheson, Senior Associate Tom Reid and Law Graduate Courtney McLennan report on this recent case

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  • Focus: Coffee appeal grounds upheld

    16 August 2011

    The Full Court of the Federal Court has overturned an earlier decision that servingware maker Bodum's reputation in its 'Chambord' coffee plunger was 'distinctly tied' to its Bodum name. Partner Tim Golder and Senior Associate Anna Thorburn report on this latest decision

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  • Client Update: Seafood v Bass - a commonsense approach

    5 July 2011

    The Full Federal Court has unanimously overturned a controversial decision concerning patent infringement, holding that commonsense should prevail when approaching the construction of patent claims. Ordinary words in claims should be given their plain and ordinary meaning, as a person skilled in the art would understand them. Partner Chris Bird and Senior Associate Lester Miller report on a case that will be welcome news to patentees

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  • Focus: Wild wild Web - securing prime Internet real estate and protecting pre-existing trade marks

    1 July 2011

    Early next year, the domain name frontier will open up and eligible entities will be able to apply for their own generic top-level domains, presenting significant opportunities and challenges for businesses. Partner Tim Golder, Senior Associate Jesse Gleeson, Trade Marks Attorney Carissa Apps and Law Graduate Andrew Wilcock look at the issues

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  • Client Update: Warning! Your brand may be associated with adult content!

    18 May 2011

    xxx domain names will be available for registration in early September. While .xxx domain names are intended for adult content, trade mark holders in other industries will be able to take advantage of a 'sunrise period' to defensively register their trade marks so as to remove the risk of brand-jacking and cyber-squatting. Partner Andrew Wiseman, Senior Associate Jesse Gleeson and Law Graduate Andrew Wilcock look at what is involved

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  • Focus: IceTV's legacy lives on in 'dynamic' copyright case

    5 May 2011

    Although recently tested in the High Court, the issue of whether copyright exists in a compilation remains difficult to define and ultimately involves a consideration of intellectual input. Partner Tim Golder and Law Graduate Courtney McLennan look at a case where the Federal Court displayed a certain latitude in finding the existence of originality.

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  • Focus: Major IP reforms under consideration

    5 April 2011

    IP Australia is currently considering draft legislation that proposes some major changes to, and developments in, IP protection in Australia. This will include consideration of submissions made by all interested stakeholders over recent weeks. In this article, Partner Trevor Davies and PTA Technical Assistant Sean Blasdall highlight some of the key features covering patents, and Partner Tim Golder and Senior Associate Anna Thorburn highlight some of the key features covering copyright, trade marks and designs

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  • Focus: Final laugh in Kookaburra copyright case?

    4 April 2011

    The Full Court of the Federal Court has rejected the appeal from an earlier decision that found Men At Work's hit song Down Under infringed the copyright in the popular folk tune Kookaburra Sits in the Old Gum Tree. EMI's liability for the authorisation of infringement is yet to be determined. Partner Miriam Stiel and Law Graduate Tracy Lu report on this latest decision

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  • Focus: Optical 88 v. Optical 88

    13 January 2011

    A recent Federal Court decision was a pyrrhic victory for the applicant, whose success in establishing that the respondent's marks were deceptively similar to its registered trade marks was overridden by a number of defences and a successful action by the respondent to have the trade marks removed for non-use. Partner Tim Golder and Lawyer Nadia Guadagno look at a case which is significant as it held that a trade mark may be infringed by taking only an essential element of the mark, and that 'use' of a trade mark may be established by a relatively small amount of promotional activity

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  • Focus: Full Court rules White and Yellow Pages not 'original literary works'

    17 December 2010

    In a landmark copyright decision, the Full Federal Court has upheld a decision that copyright in both the White Pages and the Yellow Pages directories was not made out because computer programs, rather than human authors, had done the crucial work of arranging the information and producing the particular form of its expression. Partner Jackie O'Brien and Law Graduate Henry Fraser report.

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  • Focus: .YOURBRAND domain name applications starting soon

    25 November 2010

    As the opening for applications for the new generic top level domain names (eg .YOURBRAND) draws closer, Partner Tim Golder, Senior Associate Jesse Gleeson and Law Graduate Nadia Guadagno look at the proposed final version of the Applicant Guidelines recently released by the Internet Corporation for Assigned Names and Numbers and recommend that companies start preparing now

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  • Focus: New code for pharmaceutical 'wholesalers'

    17 November 2010

    Businesses that handle, store and distribute certain medicines at the wholesale level should be aware of new standards about to be released by the Therapeutic Goods Administration. Partner Sarah Matheson, Senior Associate Ric Morgan and Lawyer Harry Evans report on the new Code of Good Wholesaling Practice for Medicines which provides additional guidance for the supply of pharmaceuticals beyond the Code of Good Manufacturing Practice

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  • Focus: Amendments pop cork on new GIs and traditional expressions

    10 November 2010

    Recent amendments to the Trade Marks Act 1995 (Cth) now make provision for the amendment of trade mark registrations affected by the inclusion of new EU geographical indicators and traditional expressions on the Register of Protected Names. Trade Mark Attorney Carissa Apps and Senior Associate Mark Williams report on the effect and implications of these changes

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  • Food Law Bulletin - October 2010

    25 October 2010

    In this edition, we look at the issue of the mandatory display of nutritional information on fast food; a new beef labelling system in NSW; misleading claims about extra virgin olive oil; colour as a trade mark on food labelling; and establishing a product's reputation for a successful trade mark opposition

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  • Intellectual Property Bulletin - October 2010

    19 October 2010

    Our intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments regarding copyright, trade marks, patents and anti-counterfeiting

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  • Focus: Personal property securities reforms and intellectual property

    30 August 2010

    The far-reaching personal property securities reform is due to come into force in May 2011 and companies with significant intellectual property assets will be affected by the sweeping changes the new legislation will bring to Australia's commercial law. Partners Diccon Loxton and Tim Golder, Special Counsel Rebecca Sadleir and Senior Associate Robyn Chatwood report on how the changes will affect IP owners

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  • Focus: The domain name floodgates are about to open!

    15 July 2010

    It will soon be possible for companies to register their own generic top level domain names, presenting an unprecedented opportunity for trade mark holders. However, there are significant technical requirements and costs involved and the number of domain name spaces that cybersquatters could use to capitalise on other people's trade marks could be significantly increased. Partner Tim Golder, Senior Associate Jesse Gleeson and Law Graduate Nadia Guadagno report

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  • Focus: Court decision brings cold comfort to franchisor

    8 July 2010

    A recent Federal Court decision that a franchisor engaged in unconscionable conduct towards its franchisees provides useful guidance to franchisors. The court found that the franchisor abused its position of strength to impose significant increases in fees payable by its franchisees. The case also examined the legality of a franchisor withholding its consent to assignment of a franchisee's interest unless the new franchisee executed a franchise agreement which gave the franchisor additional benefits. Partner Tim Golder, Senior Associate Robyn Chatwood and Law Graduate Ben Mee discuss the implications of the court's decision

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  • Focus: New Code of Good Manufacturing Practice for therapeutic goods

    22 June 2010

    The Code of Good Manufacturing Practice applicable to all manufacturers of medicines, including manufacturers of active pharmaceutical ingredients, will be updated from 1 July 2010. Senior Associate Ric Morgan and Law Graduate Saul Lazar look at what this entails

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  • Focus: Synonyms - a shortsighted attempt to avoid copyright infringement

    10 June 2010

    The Federal Court has granted an interlocutory injunction restraining the use and publication of an advertising campaign. The decision is significant as it was held that there can still be copyright infringement where the same expression of ideas has been adopted albeit through the use of synonyms. Partner Tim Golder and Law Graduate Nadia Guadagno look at this important decision.

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  • Client Update: Sun sets on sunrise period for .co domain names

    8 June 2010

    .co domain names will soon be available for registration. Until 10 June 2010 some owners of registered trade marks can take advantage of a 'sunrise period' to submit a priority registration application. Partner Tim Golder and Senior Associate Jesse Gleeson look at what is involved.

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